Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Thursday, 31 July 2014

EPO President Battistelli in his office. The Eiffel Tower is not visible from this angle, it would appear.

Back in 2010, when
Benoît Battistelli was first appointed as President of the European Patent Office (EPO), there was a certain
lack of transparency in the election process. As a blog post by IAM Magazine reported
at the time, mischievous rumours quickly emerged from the EPO staff union newsletter (PDF link) to fill the vacuum
of information regarding the circumstances of Mr Battistelli’s appointment.

Battistelli’s
original contract was negotiated in secret with Mr Jesper Kongstad, the then Acting
(and now actual) Chairman of the Administrative Council. It was rumoured, intriguingly, that the contract specified
that Mr B’s place of employment was the Parisian suburb of Saint Germain-en-Laye
(the town of which he was deputy major, the spiritual home of football team Paris Saint-Germain and the birthplace of Louis XIV, the Sun-King), and that it contained an annex granting
him full pension rights at the end of his five-year contract. While Merpel, whose nine lives invariably make any sort of pension annuity unaffordable since the pension must last so much longer than expected, can see the attraction of having full pension rights after a relatively short employment stint, she wonders what advantage or reason could lie behind deeming Mr Battistelli's place of employment to be 700 km west of where his office is actually located, if there is any substance behind that improbable rumour. The union newsletter, SUEPO Informs, also reported that Mr Kongstad refused to show the final
contract negotiated with Mr Battistelli to the Administrative Council ('AC'), despite repeated requests by its apparently quite powerless members.

As we now know, Mr. Battistelli has been
reappointed for a further three-year term starting in July 2015, to much
unhappiness on the part of some EPO staff. What surprised Merpel, however, was being
informed by an impeccable source that the AC has once again entrusted Mr Kongstad with negotiating the extended contract with Mr Battistelli, and without
requiring that the terms be presented to or ratified by the AC. This casts
significant doubt on the SUEPO suggestion that, back in 2009, significant numbers of AC
delegates were unhappy not to have been given sight of the original contract (or
it suggests that those delegates have very short memories if they are prepared for the same to happen again).

In particular, Merpel understands that

the decision to extend Mr Battistelli’s
contract was carried by an overwhelming majority of the delegations, in a
secret ballot.

having made the decision to extend the
contract, the Council then authorised Mr Kongstad to negotiate and conclude
the terms of the extension “under his sole authority”

this latitude is however constrained by an understanding that
the extension be on the same basis as the original 2009 contract.

It is unfortunate (meaning that Merpel takes great
delight in observing) that, at the highest levels of the European Patent
Organisation, such murkiness abounds. The original power struggle; the former
rivals who are now apparently interdependent as President and AC Chairman; the negotiation
of a secret extension to a secret contract appointing the head of a large,
powerful, pan-European organisation to which countries have devolved extensive
powers: it’s all grist to Merpel’s mill.

Less savoury is the apparent indifference of the AC members to the staff concerns. The AC membership is the various member states, represented almost invariably by the head of each national patent office. Never friends to the EPO staff
unions, it appears that the AC has been deaf in recent months to the entreaties of EPO staff
representatives asking them on several occasions to put a check on Mr Battistelli’s more excessive actions. Indeed
at the most recent meeting, Merpel hears that the AC discussed the current unrest with the
President and expressed its unwavering support to him, urging him to push ahead with his reforms.

Is this an example of patent office heads naturally
siding with one of their own, and against the troublesome unions? Or is it more nuanced,
with AC members having due regard to staff concerns but seeing a different
balance in the debate? And just why is the AC so eager to keep Mr Battistelli
in place for three more years at (apparently) any cost?

Most intriguing, does anyone other than Mr B and Mr K know
what was in that original contract? Merpel is interested both in the literal answer to this question (i.e. has the contract been seen by, or have its terms been revealed to, anyone other than the two main actors?), as well as in the implied further request that someone might spill the beans and tell us whether Mr B was indeed deemed to be employed in France rather than in Germany, and what tiny fraction of each renewal fee goes into Mr Battistelli's monthly pay-cheque.

While Merpel is always eager to hear from EPO
staff members, on this occasion she is hoping to also hear from anyone in the
national patent offices who either attends the AC meetings or knows the
underlying politics behind the initial appointment and later reappointment of Mr B. Her address for such correspondence, for which she will as
ever be unfailingly grateful and unyieldingly discreet, is merpel.mckitten@gmail.com.

The more secretive the EPO is in its dealings, the more curious we all become about what is really going on there. The 21st century is an era of public sector transparency, a fact that the EPO appears not yet to have grasped. Perhaps, if any reader is passing through St Germain-en-Laye, they might drop a note to that effect through the letterbox of the EPO employee who may or may not be based there.

Wednesday, 30 July 2014

Following some fear [here and here] that UK Government could have decided not to introduce exceptions for private copying, broader quotation and parody into UK copyright after all, last month this blog reported that the "missing" exceptions were back with new [well, not so new as they were basically unchanged] draft Statutory Instruments (SIs) [here and here].Following approval in the House of Commons earlier this month, yesterday at around 6:15 pm [as the illustrious and learned Katfriend who told this Kat specified] the House of Lords also approved the draft SIs [you can read an early statement from the Open Rights Group here].This means that, following the bunch of other exceptions [research, education, libraries and archives; disability; and public administration] that entered into force on 1 June last, also these new exceptions are now scheduled for entry into force. This will be on 1 October 2014.The official report from yesterday's discussion in the House of Lords makes an engaging reading. New IP Minister Baroness Neville-Rolfe said pretty interesting things not only about these exceptions, but more in general about the role of copyright and how UK Government intends it.

Strong and (clearly) respected

She started by saying that "[c]opyright legislation needs to be strong and respected to keep up with the pace of innovation and the digital revolution." To this end, "[t]he Government are committed to raising awareness and understanding of IP across all businesses large and small in order to protect innovation and originality and meet changing consumer needs."Among the initiatives promoted by UK Government, she mentioned extending copyright protection for sound recordings and performances [by the way: did you know that apparently France, Poland and Romania have yet to transpose Directive 2011/77/EU into their national laws?], setting up the Police Intellectual Property Crime Unit [see the "This website has been reported to the police" initiative described by Jeremy here], supporting the industry-led Copyright Hub and educational campaign Creative Content UK[also mentioned in the Australian Government Discussion Paper on Online Copyright Infringement, which has just been released].

Personal copies for private use do not come with a levyWith regard to this exception, the IP Minister started by saying that "[c]opyright law should not stand in the way of people being able to use and enjoy their own property." However, compared to private copying in other EU Member States, the forthcoming UK exception for "personal copies for private use" will be narrower.

Kat-cloud

In particular "it will not allow someone to give or sell a copy they have made to someone else, or share copies from their personal cloud; it will not allow someone to obtain a copy from sources they do not own, such as rented copies, broadcasts or on-demand services; it will not prevent copyright owners from using technology to guard against copyright piracy, such as the copy protection for films found on DVDs and Blu-ray discs; and it will not prevent copyright owners from licensing additional services, such as cloud services which allow shared access to content."Because of its narrow scope, UK Government decided against the introduction of private copying levies [which, for instance, have been recently at the centre of heated discussions in Italy], also on consideration that British consumers would not tolerate them. "They are inefficient, bureaucratic and unfair, and disadvantage people who pay for content", said the Minister, who added that the InfoSoc Directive leaves Member States free not to provide compensation where an exception is likely to cause minimal or no harm, or where appropriate payment has already been made. This view is also supported by UK-based IP profs. In any case, as readers might probably remember, the de minimis rule as per Recital 35 to the Directive is among the issues at stake in the pending Copydanreference [Merpel, who likes drama, says: it would be fun if the Court of Justice had a different opinion from UK Government and IP profs ...].

Parody caricature and pastiche will have to be fair dealingAs regards the parody/caricature/pastiche exception, the Minister observed that "we need to protect the right to mock the high and mighty". Above all, "[c]opyright should incentivise creation, not obstruct it. It should allow people to voice their opinions, not stifle them."Fair (dealing) enough, but you better not think that this does give you carte blanche to do whatever crosses your mind. This is because UK Government deemed appropriate to frame the parody/caricature/pastiche exception within fair dealing. So, "fair dealing will mean that copying a whole work without changing it will not be allowed. For example, it would not be considered “fair” to use an entire musical track on a spoof video. This will mean the market for the original work should be unaffected."This Kat has already criticised the move of framing parody within fair dealing, on fear that in practice UK exception might end up being a pretty narrow defence, especially when it comes to artistic works. As regards music tracks, Merpel wonders how this could affect the market for this ... Yet, "At present, when a whole work, such as a musical track, is used in a parody the copyright owner will often allow this in exchange for appropriate remuneration. The fair dealing exception means that such licensing will still be possible." This new exception leaves unaffected "tough laws on libel".

Random quotes will be OK

Quotation beyond criticism or reviewFinally, with regard to quotation, broadening its scope was deemed necessary because "UK copyright legislation currently allows quotations and extracts only for the purpose of “criticism or review”. So a whole range of activities which the average person is likely to consider reasonable risk infringing copyright because they fall outside the current “criticism and review” exception. An academic paper or student essay which quotes a title of a journal, book or film, or uses a short extract to ensure proper citation, although likely to be considered fair by a court, is likely to fall outside the current “criticism and review” exemption. Small theatres and record companies have complained that they are often prevented from using quotes from newspaper reviews in their own promotional material."The changes "will remove this limitation and permit all types of fair quotation, as long as there is acknowledgement of the source of the quotation. There should be no obstacle to fair and honest quotation. British citizens should have no less a right to it than those of other democratic nations."

"Greek dairy company Fage wins yogurt case in Britain" is the headline of a piece of breaking news carried in Ekathimerini today. The yoghurt case in question is Fage UK Ltd & Another v Chobani UK Ltd & Another[the decision of Briggs J at trial is at [2013] EWHC 630 (Ch), noted by the IPKat here; the appeal decision, at [2014] EWCA Civ 5, featuring Lords Justices Lewison, Kitchin and Longmore, is noted by the IPKat here]. This Kat has been fascinated by this dispute for several reasons. First, he is on good terms with the legal teams on both sides, and has the opportunity to be exposed to the full force of the logic on both sides. Secondly, he was hoping that this case would test the parameters of the current discussions on initial interest confusion, extended passing off and the interrelation of geographical indication protection and regular protection of reputations. As it turned out, this dispute didn't really do much to develop doctrine in any of those directions, but that doesn't matter. The third reason is that this Kat has a long-time and deeply-held affection for yoghurt ...So what happened in this dispute? To bring recent readers up to speed, Greek yoghurt maker Fage and its UK distributor FAGE had sold "Greek yoghurt" in the UK for many years, enjoying a 95% market share. Chobani, a US company, made and sold in the US a product that was also described as “Greek yoghurt”. Both FAGE's and Chobani's yoghurts were described as being "thick and creamy" in comparison with ordinary yoghurt. Such thick, creamy yoghurt was derived from ordinary yoghurt by two main industrial processes: (i) straining, which involved the separation and removal of the watery whey, and (ii) the use of thickening agents.

Almost all the yoghurt sold to the public in the UK in the 25 years before 2012 with descriptions including "Greek yoghurt" on the labels on the pots was strained yoghurt -- and it was made in Greece, like that of FAGE; this labelling appeared to be a matter of convention in the UK. In contrast, much larger quantities of thick and creamy yoghurt were sold in the UK as "Greek style yoghurt". None of the yoghurt described as “Greek style yoghurt” originated from Greece, the thick and creamy texture of such yoghurt being generally achieved by the use of thickening agents rather than by straining.In 2012 Chobani began to sell its yoghurt in the UK. FAGE, alleging passing off, sought an interim injunction [noted by the IPKat here]. FAGE maintained that thick and creamy yoghurt was properly labelled “Greek yoghurt” only if it both came from Greece and was thickened by straining, and that there was an understanding to that effect on the part of the yoghurt-eating public so that use of the same phrase to describe yoghurt which was not made in Greece in that way would involve a damaging misrepresentation. No, said Chobani: the description “Greek yoghurt” denoted no clearly identified distinctive class in the minds of the yoghurt-buying public. An interim injunction was granted and the action then went to full trial on two issues:

(i) did use of the term “Greek yoghurt” by Chobani constitute an act of passing off?

(ii) on a counterclaim for malicious falsehood by Chobani, was a letter sent by FAGE to the Trading Standards Team of the London Borough of Camden actionalbe? This letter asserted that Chobani had breached EU regulations, that it had failed to mark its products with a requisite identification of their place of manufacture, and that it had failed to make it clear that it could not confirm that its yoghurt was free from artificially introduced bovine growth hormone. According to Chobani, these falsehoods were made recklessly and therefore maliciously, and in a manner calculated to cause it pecuniary damage, in particular because FAGE’s letter asked Camden Trading Standards to order the removal of Chobani's product from retail sale pending investigation of those allegations.

Briggs J held on both issues for FAGE. In his view:

For any claimant to demonstrate ownership of the requisite goodwill attached to the relevant trade name or get-up, that term had to be associated, in the mind of the public, with a clearly defined class of goods which was sufficiently distinguished from other similar goods by that name.

Where, as here, a trade name was descriptive of geographical origin, it had to have an effect that was more than purely geographical, but that effect did not need to be a reputation for higher quality or cachet; nor did the consumer need to know how the product in question was made.

The perception that the relevant trading name denoted a distinctive class of product needed to be that of merely some section of the public, and it was for FAGE to show (i) that it had built up a substantial goodwill attached to the trade name “Greek yoghurt” by which they -- and indeed others -- had described their product and (ii) that Chobani's use of the same or a similar name caused or threatened to cause substantial damage to that goodwill. Both these questions were matters of both fact and degree.

On the facts a substantial proportion, probably more than 50 per cent, of Greek yoghurt consumers in the UK thought it was made in Greece; the proportion of Greek yoghurt purchasers to whom that mattered was substantial, even if that group of consumers constituted only a modest proportion of yoghurt eaters as a whole. A perception that there was something special about products labelled “Greek yoghurt”, which was less than fully matched for example by products labelled “Greek-style yoghurt”, was entertained by a substantial proportion of British yoghurt-eaters, and probably by a majority of those who were regular buyers of Greek yoghurt -- 95 per cent of which was produced by FAGE. On this basis FAGE could be said to have shown that substantial goodwill had become attached to the use of the term “Greek yoghurt” as denoting more than merely the geographical origin of the yoghurt.

The best evidence of the subsistence of goodwill in the term “Greek yoghurt” was (i) the fact that UK yoghurt producers had respected the labelling convention for more than 25 years, (ii) the unanimity of the trade witnesses in that respect and (iii) the fact that products so labelled were able to command a premium price, even when not made by FAGE. This showed that the use of the term “Greek yoghurt” to describe yoghurt not made in Greece involved a material misrepresentation; whether Chobani's yoghurt was made by the straining method commonly used for the production of Greek yoghurt was therefore immaterial.

The introduction into the market of a product labelled “Greek yoghurt” but made in the US would obviously damage the distinctiveness of the description “Greek yoghurt” as meaning, inter alia, yoghurt made in Greece. FAGE was therefore entitled to a permanent injunction to stop Chobani passing off its US-made yoghurt in England under the description Greek yoghurt.

Chobani’s counterclaim for malicious falsehood failed. The allegations, even if they were false, were not malicious; nor had they been calculated to cause damage.

The Court of Appeal dismissed Chobani's appeal. Refusing Chobani permission to amend their Grounds of Appeal so as to incorporate some fresh European law points, the Court of Appeal concluded as follows:

Chobani sought to persuade the Court of Appeal that many of the trial judge’s findings of fact were wrong. The Court of Appeal disagreed, remarking with regard to several of his findings that they were indeed “unassailable”.

Greek Yoghurt, sold as such in the UK, must be made by a straining process so as to remove the watery whey, must contain no additives, and must be made in Greece.

The permanent injunction remains in place, preventing Chobani from selling in the UK as Greek Yoghurt, a strained yoghurt made in the US.

Chobani was also ordered to pay FAGE’s costs of the appeal with a substantial amount to be paid on account straight away .

Chobani was refused permission by the Court of Appeal to appeal to the Supreme Court on the basis that, in deciding the main extended passing off issue, the Court of Appeal had applied settled principles; and on the European points that the arguments in favour of the finding that Greek Yoghurt is not within the scope of Regulation 1151/2012 on quality schemes for agricultural products and foodstuffs were overwhelming and, furthermore, this issue did not raise a point of general public importance.

Chobani then applied to the Supreme Court for permission to appeal. The big news is that this application has been refused. According to the Supreme Court, ordering Chobani to the costs of this final stage in the keenly-fought litigation, there was no arguable point of law to consider. The panel consisted of three judges (the President, Lord Neuberger, presided; Lords Reed and Clarke also sat)

The result of this is that Chobani has to pay FAGE’s costs in the Supreme Court, plus the further instalment of costs from the Court of Appeal order, which works out at an extra £170,000 -- and that's an awful lot of yoghurt -- payable within four business days. No "Greek Yoghurt" product can now enter the United Kingdom unless it fulfils three criteria: it must be made by a straining method, containing no additives or preservatives -- and must be made in Greece).

A generous Katpat goes to Richard Price (Winston & Strawn, the firm instructed by FAGE), for keeping this Kat so well informed -- and Merpel adds her congratulations on what turns out to be Richard's 5-0 score in terms of victories before the House of Lords/Privy Council/Supreme Court; Richard's far too modest to let her tell anyone though ...

While interest in the governance of Eponia (the eponymous Central European fiefdom of the European Patent Office) runs gratifyingly high, as the comments posted to Merpel's Sunday night blogpost testify, a more serious thread of interest in the present and future of the European patent system is not hard to discern either, as it weaves its way through the consciousness of the patent community. One strand of this thread is an intriguing event hosted in two cities which, between them, hold so much of the fate of the new European patent regime in their hands: it's the Managing Intellectual Property (MIP) magazine-backed European Patent Reform Forum and you can catch it in Munich on 9 September or wait a couple of days and attend it in Paris on 11 September. The significance of the host cities will not be missed on patent practitioners and their clients, or on commentators and lobbyists: the Unified Patent Court, looming large in our minds though not yet in our daily routine, has chosen Paris for the Central Division of its First Instance Court, with Munich handling mechanical engineering cases. The "missing" city is London, which will accommodate the court's chemistry and pharma workload -- though it was London that hosted the same organisers' International Patent Forum this March (on which see "A touch of the Waldorfs", here).

Fast food

Having founded MIP back in the early 1990s and then having edited it for some years, this Kat is always happy to see what it's up to, and he's pleased to see that quite a few of his friends, and contributors to his own rival publication, have been pressed into service in the forthcoming Forums. The panel of Munich speakers and participants, which you can see by clicking here, features a convincing blend of in-housers, private practitioners and bureaucrats, as well as a good mix of industrial sectors, and the programme focuses a good deal on the discussion of strategic issues (ie what to do, when and how to do it). A novel feature is what Merpel calls "speed-lunching", since the action-packed morning and afternoon sessions leave just 50 minutes for the traditional mid-day pit-stop and refuelling. The venue for this challenging event is the "Marriott Munich Hotel, Munich" which, from the repetition of the M-word, sounds like an attempt to persuade us that the hotel really and truly is in Munich -- unlike that lovely city's airport, which is actually a short flight away.

Slow food

The Paris line-up (which you can check out here) features many of the same speakers, but with some tactical substitutions to reflect the local terrain: among them is the redoubtable Christophe Geiger, Director of CEIPI in Strasbourg. This day's programme also has the speed-lunching feature, so Merpel hopes there won't be too many escargots on the menu. The venue for the "Paris re-match", as one might describe the second edition of the Forum, is the Paris Marriott Hotel Champs-Élysées, which sounds like a good place for a night out on the town an ideal location for an event of this nature, particularly for some of our American cousins who don't travel too well and like to feel at home wherever they may be ...

Digest the message ...

Now for the nitty-gritty. MIP, out of the kindness of their hearts and notwithstanding their lack of charitable status, are offering FREE attendance for academics and for in-house counsel, patent counsel and R&D professionals. If you don't fall within any of those categories, you're still entitled to a 25% DISCOUNT if you are an IPKat reader who happens to be a private practitioner, consultant or adviser (this works out at €820). Everyone else -- and there can't be that many "everyone elses" apart from monarchs, footballers and bloggers -- has to pay the full whack, €1,095.

Further information about this useful and highly tempting forum can be obtained by clicking here. To claim your special IPKat reduction, email Alicia Sprott at alicia.sprott@legalmediagroup.com and quote your VIP Katcode IPK25.

Tuesday, 29 July 2014

One of the defendants in the ‘Coinye West’ trademark infringement
suit entered into a consent agreement with Kanye West and his company Mascotte
Holdings (Plaintiffs) over the Coinye West crypto-currency. Judge Analisa
Torres from the Southern District of New York issued the permanent injunction.

Defendants had launched a crypto-currency, the COINYE WEST,
or COINYE, or COYE on the <coinyewest.com> website in December 2013. They
redirected the site to <coinyewest.in> after receiving a cease and desist
letter from Kanye West’s attorneys. In spite of the letter, their crypto-currency
launched in January 2014.

Bitcoin was the first crypto currency to emerge in 2009 and
has since been the source of inspiration for many more. As stated in the Plaintiffs’
amended complaint, “[t]here are over 150 new digital currencies attempting
to compete with Bitcoin, some in earnest and some as marketing ploys.” A
crypto-currency is created (‘mined’) by individuals using open-source software
and computers to solve complex math problems. If they solve a math problem,
they are rewarded in coins (I will have to find another way to become a millionaire!).The amended complaint explains in detail how such a system works.

Kanye West needs no introduction, but let me refresh your
memory. As stated in the amended complaint, “Mr. West is credited with refocusing rap from hardcore gangster themes
to more personal messages,” and “Mr. West
sets trends for everything he touches.” He is also a member, with Kim
Kardashian, of the #WorldsMostTalkedAboutCouple, aka Kimye, which is (not yet?)
a trademark.

However, Mascotte Holdings, Inc. owns several KANYE WEST
trademarks, such as KANYE WEST in class 41 for music composition and KANYE WEST
in class 25 for clothing. Kanye West is quite adept at self-promoting his personal
brand, and can boast 10.6 million followers on Twitter, and an April 2014 U.S.
Vogue Cover with wife Kim, which has been spoofed many times.

But the Kanye West brand is no joke and the artist is a savvy
businessman who indeed seems to have a Midas touch, changing everything he
touches into gold. It is not surprising that he would be chosen to adorn the
face of a new currency. The first version of the COINYE represented a golden cartoon
version of the famous singer, complete with ‘shutter shades sunglasses, and then
was changed to represent a cartoon version of Kanye West as a fish.The fish
had shutter shades as well.

Alas! Neither the use of Kanye West’s name nor his likeness had
been authorized and Plaintiffs had issued a complaint last January. They amended
it in March, claiming trademark infringement, trademark dilution, unfair
competition and cyber squatting. The complaint mentioned several cases of
consumer confusion on Twitter, such as this one or this one. They also claimed
that Kanye West’s right of privacy and publicity had been violated under New
York Civil Rights Law §50 and §51. This law was also recently the basis for
Lindsay Lohan's suit against the makers of the Grand Theft Auto Video Game. It provides a cause of
action if the identity of the plaintiff has been used in advertising or
commerce without written consent.

The defendant is permanently enjoined from registering or
operating a website using the KANYE WEST mark, the COINYE West mark, the COYE
mark or any “colorable imitation” of these marks, to use the mark KANYE WEST,
to use Kanye West’s likeness in any
manner likely to cause confusion tor to deceive the public. However, this site is still claiming to offer coinye coins and is using the cartoon of Kanye West
as a fish. It states in its FAQs that “the
guys who started Coinye are nowhere to be found, but we gladly take it from
here” and that “The Original
Developers ran off from the lawyers. However, the coin was already unstoppable
out, so the community decided to take over and work on it for further
development (sic).” Will there also be further legal developments?

"The City of London police has started placing banner advertisements on websites believed to be offering pirated content illegally. The messages, which will appear instead of paid-for ads, will ask users to close their web browsers. The move comes as part of a continuing effort to stop piracy sites from earning money through advertising. Police said the ads would make it harder for piracy site owners to make their pages look authentic.

"When adverts from well known brands appear on illegal websites, they lend them a look of legitimacy and inadvertently fool consumers into thinking the site is authentic. [said Detective Chief Inspector Andy Fyfe from the City of London Police Intellectual Property Crime Unit , PIPCU]. This new initiative is another step forward for the unit in tackling IP crime and disrupting criminal profits. Copyright infringing websites are making huge sums of money though advert placement, therefore disrupting advertising on these sites is crucial and this is why it is an integral part of Operation Creative."

The initiative will make use of technology provided by Project Sunblock[whose domain name projectsunblock.com, Merpel notes, can be also be read as "projects unblock"] -- a firm used by major brands to stop adverts appearing alongside questionable content such as pirated material or pornography. ...

In the past, some have raised concerns about Pipcu's process in adding a website to the IWL [that's "Infringing Website List"]. Ernesto Van Der Sar is the editor of TorrentFreak, a news site that covers issues around online piracy. When Pipcu announced its intentions in March this year, Mr Van Der Sar said he worried about the implications.

"As with all blocklists there is a serious risk of overblocking. Without proper oversight, perfectly legal sites may end up losing good advertising opportunities if they are wrongfully included."

Sunblock? I grow my own, says Stanford

The battle against online piracy has seen content creators attempt many different strategies in order to stem the flow of illegal downloading.
In the UK, the courts have ordered internet service providers to block almost 50 different websites offering pirated content, either by direct download or through peer-to-peer sharing.
While effective in lowering the traffic of these sites, filtering is a flawed prevention method - many internet users are adept in using different technologies to circumvent the court-imposed restrictions.
This latest attempt looks to hit the owners of these websites in a more painful way - by stopping advertising revenues from coming in".

Says the IPKat, this seems a novel and imaginative way to alert consumers that they may be about to purchase counterfeit or otherwise infringing goods. He's not too familiar with the technology, but he recalls that those who run offending sites often have whole sequences of pages that link to one another, sometimes from those that offer genuine goods and services but which click through to more dubious delights. How easy is it for target websites to circumvent this initiative? Do readers know?

Merpel is quite fascinated with this. On one level she'd love to know what might happen if the message on the PIPCU banner read, somewhat untruthfully: "It is an offence to purchase pirate and infringing goods -- and we know who you are, so you'd better close this browser page pretty fast". On another level she speculates that some of the more retaliatory site owners might perpetrate much the same trick on the police themselves, telling internet users that they had reached a fake police site and redirecting them to a "real" site of their own.

This guest blogpost comes courtesy of Katfriend and occasional contributor Suleman Ali (Holly IP), a patent attorney whose interest lies mainly in the biotech and medical fields --an interest that is quite germane to the case he writes about here about a patent for a collapsible device for filling holes in the heart and how a trial judge and an EPO Opposition Division could reach quite different conclusions when confronted with essentially the same evidence:

AGA
Medical Corporation v Occlutech (UK) Limited[2014] EWHC 2506 (Pat) is a decision by Mr Justice Roth in the Patents Court, England and Wales.
AGA Medical claimed that Occlutech had infringed its patent EP (UK) No.
0,957,773 to a medical device for occluding defects in the atrial septum of the
heart. Occlutech responded that the patent was invalid on the
basis of a prior disclosure in a clinical trial and on other grounds. An EPO Opposition Division had revoked the same
patent last year, and is in
appeal from that decision.

Issues of Interest

This judgment has
the following interesting points:

* a discussion of the case law on confidentiality.

* a finding that a clinical trial did constitute
novelty-destroying disclosure. The EPO Opposition Division found the same
clinical trial to be confidential and thus not novelty-destroying.

* a discussion of when an ‘intermediate generalisation’ adds
matter, in particular where features which are not presented as ‘inventively
distinct’ and are disclosed in a particular context are used as the basis of
amendment. In the present case Mr Justice Roth held that the amendments did not add
matter, but the EPO opposition division held that they did.

The technology

The patent concerns a device which can be used to fill a
‘hole in the heart’, i.e. a hole in the wall (the septum) between the two parts
of the heart. The device is collapsible and in its collapsed form can be passed
to the heart through a blood vessel using a catheter, thus avoiding the need
for open heart surgery. The device is shown in the adjoining figure in the form
it adopts to seal the hole in the septum. It is formed of two discs joined by a
thinner cylindrical waist and is made of woven strands of a ‘memory metal’
which resumes its shape after being compressed. When inserted into the hole the
discs occupy a position on either side of the wall keeping it in place. At
least one of the discs is ‘cupped’ (rather than flat) which means only the
perimeter of the disc contacts the septum, and this allows a tight join.

Claim 1 of the patent as presented in the decision is as
follows:

"A collapsible medical device, comprising(1) a plurality of metal strands forming a tubular
braided metal fabric having an expanded preset configuration,(2) the ends of the strands of the tubular braid
being secured in order to prevent the strands from unravelling,(3) wherein said medical device is shaped to create
an occlusion of an abnormal opening in a cardiac septal wall,(4) whereby said expanded preset configuration is
deformable to a lesser cross-sectional dimension for delivery through a channel
in a patient's body,(5) the woven metal fabric having a memory property
such that the medical device tends to return to said expanded preset
configuration when unconstrained,(6) the expanded preset configuration comprising
first and second expanded diameter portions respectively at distal and proximal
ends of the device and a reduced diameter portion disposed between the two
expanded diameter portions, said reduced diameter portion having a length dimension
which approximates a thickness of the septal wall at the abnormal opening,(7) wherein at least one of said first and second
expanded diameter portions is cupped towards the other of the expanded diameter
portions causing, in use, the perimeter edge of the cupped expanded diameter
portion to fully engage the sidewall of the septum,(8) the collapsible medical device further
including an occluding fiber retained within said tubular woven fabric."

Other Proceedings

The parties have been in litigation before in the UK over an
earlier patent (see Occlutech GmbH v AGA Medical Corporation [2009] EWHC 2013(Ch), upheld on appeal [2010] EWCA Civ 702,
reported by the IPKat [see here and here]. The IPKat has also previously reported litigation between the parties in Sweden
[see guest post by Peter Kenamets, here]. In the case of the present patent there is ongoing
litigation between the parties in a number of jurisdictions, including the
Netherlands. As mentioned above, the patent is in appeal at the EPO from a
decision of the Opposition Division.

Prior Use In A Clinical Trial

Before the priority date a clinical trial was carried out
using AGA devices in three children in the Bratislava Children’s University
Hospital. Two important issues arose from this:

* did the devices that were used have at least one or two
‘cupped’ discs (rather than flat discs)?* was the trial confidential?

The doctors that had taken part in the trial gave evidence.
Dr Gougen’s evidence indicated none of the devices was cupped, though he
admitted this was something he might not have noticed. Professor Masura's recollection was clearer: he said that two of the devices had cupped
discs. Mr Justice Roth found him to be ‘a very clear witness’ and ‘found his
evidence convincing’. Dr Gavora said all three of the devices had cupped discs.
However his evidence was less convincing and it was noted that he had
previously given contradictory answers on the same issue before a Dutch Court.
Clearly there were significant discrepancies between the evidence of the
witnesses, but Mr Justice Roth came the conclusion that ‘at least some of the
three devices’ used in the trial had cupped discs.

The Opposition Division was much more critical of the
evidence given by the same witnesses and decided that it was ‘not convinced’
that any of the devices used in the clinical trial had a cupped disc.

Were the Trials Confidential?

Mr Justice Roth gave emphasis to the following paragraph
from Coco v AN Clark (Engineers) Ltd [1969] RPC 41 on the circumstances in
which confidentiality is imposed:

"It seems to me that if the circumstances are such that
any reasonable man standing in the shoes of the recipient of the information
would have realised that upon reasonable grounds the information was being
given to him in confidence, then this should suffice to impose upon him the
equitable obligation of confidence. In particular, where information of
commercial or industrial value is given on a business-like basis and with some
avowed common object in mind, such as a joint venture or the manufacture of
articles by one party for the other, I would regard the recipient as carrying a
heavy burden if he seeks to repel a contention that he was bound by an
obligation of confidence"

He noted that none of the doctors involved in the clinical
trial had been asked to sign a confidentiality or non-disclosure agreement.
They gave evidence that they had never been given the impression that the
devices were confidential. In addition he felt that ‘there is no presumption of
confidentiality simply because this was a clinical trial. Everything depends on
the facts’. Professor Masura had spoken about the devices in briefing sessions
to other doctors at the hospital and had described the device and clinical
trials at a presentation at a conference. He had acted in a way that he did not
seem to perceive himself to be under a duty of confidence. It was also clear
that the doctors were not embarking on a commercial venture, so the
disclosure of the devices was not done in a ‘business-like’ way that may have
led to an assumption of confidentiality.

Mr Justice Roth also considered Carflow Products (UK) Ltd v
Linwood Securities (B’ham) Ltd [1996] FSR 447 as to the circumstances in which
an equitable obligation of confidence arose. In that case Jacob had said that, on an objective basis, an obligation of confidence is not imposed merely because
a prototype is being offered for sale.

Mr Justice Roth concluded the clinical trial had not been
confidential and that it therefore destroyed the novelty of the patent. However he added that the EPO's Opposition Division had reached the opposite
conclusion: the fact it was a clinical trial gave rise to a prima facie assumption of
confidentiality which had not been rebutted. The Opposition Division had based
its view on decisions T906/01, T152/03 and T229/06.
However, I believe there are EPO decisions that would have supported Mr Justice
Roth’s position on whether a clinical trial per
se is confidential, such as T158/96 and T7/07.

Obviousness Over an Earlier Prototype

Dr Gu of AGA had disclosed an earlier prototype of the
device in a presentation at a medical congress before the priority date. That
device had two flat discs, i.e. no cupped discs. In the present case the obviousness
analysis was essentially to determine whether a device with one or two cupped
discs was obvious from the disclosure of the earlier prototype by Gu. On this
question Mr Justice Roth accepted the view of one of the expert witnesses,
Professor Gewillig, that the skilled person presented with the earlier
prototype would know that a flat disc device would lead to a serious risk of
clotting due to thrombus formation in areas where the flat disc did not fully
contact the septum. The skilled person would seek ways to avoid this risk, and
adapting the earlier prototype to introduce cupped discs was an obvious
modification that could be derived from prior art devices. One of AGA’s expert
witnesses had argued that the alternative solution of shortening the waist
would be adopted instead. In response Mr Justice Roth pointed out that the fact
there may be a number of other obvious modifications did not mean the
modification at issue (introducing cupped discs) was not obvious.

Insufficiency

Occlutech’s argument on insufficiency was based on the fact
that claim 1 required the disc edge to ‘fully engage with the sidewall of the septum’.
They submitted this meant there could be no gaps all the way round the disc
edge. That was difficult to achieve and impossible to measure. Mr Justice Roth
said the skilled person would not read this feature literally, realising that
the septum is not completely flat and there will be points of no contact. Thus
‘full engagement’ does not require ‘perfect engagement’ and any gaps would be
‘insignificant and unintentional’. Construing the feature in this way led to
the insufficiency attack failing.

Added Matter

Two of the four added matter attacks are discussed here. The
first attack alleged that claim 1 added matter because the requirement of each
end being ‘contained by means for securing each end’ had been deleted from the
claim as filed. The arguments were lengthy and complex on this point, but
ultimately Mr Justice Roth found the amendment did not add matter because the
application taught a method which could be used to produce a device a device
according to claim 1 where one end was not secured.

The EPO Opposition Division had taken the opposite view. It
applied the 3-part test described in the Guidelines at Part H, Chapter V-3.1:

‘The replacement or removal of a feature
from a claim does not violate Art. 123(2) if the skilled person would
directly and unambiguously recognise that:

(i)
the feature was not explained as essential in the disclosure; (ii)
the feature is not, as such, indispensable for the function of the invention in
the light of the technical problem the invention serves to solve; and (iii)
the replacement or removal requires no real modification of other features to
compensate for the change.’

The EPO found the amendment to fall foul of all 3 limbs of
the test and therefore to add matter.

The second added matter attack of interest was based on
introduction of the feature of one or both discs being ‘cupped’. While this feature
became important in determination of novelty and inventive step it was not in
the claims of the application as filed and is essentially only disclosed as
part of specific embodiments shown in the Figures.

"If the specification discloses distinct sub-classes of
the overall inventive concept, then it should be possible to amend down to one
or other of those sub-classes, whether or not they are presented as inventively
distinct in the specification before amendment. The difficulty comes when it is
sought to take features which are only disclosed in a particular context and
which are not disclosed as having any inventive significance and introduce them
into the claim deprived of that context. This is a process sometimes called
'intermediate generalisation'."

The application did have some discussion of the cupped
feature, describing how it ensured complete contact with the septum and the
fact that this would reduce the chance of bacterial endocarditis. Mr Justice
Roth felt this made it clear to the skilled person that the feature was not
tied to other features of the specific embodiments, and so could be added to
claim 1 without adding matter.

Again the EPO Opposition Division had taken the opposite
view, holding that the feature of the discs being cupped was tied to the
feature of the discs being of different sizes, and therefore generalising the
feature to the device of claim 1 added matter.

Infringement

It was decided that, if the patent were valid, Occlutech’s devices would have infringed.

Occultech had also asked for a declaration of
non-infringement for a specific device which did not have fabric within the
hollows of the disc. Mr Justice Roth indicated that such a declaration would
have been given if the patent had been found to be valid.

Conclusions

It is striking that Mr Justice Roth and an EPO Opposition
Division managed to reach such different conclusions on every point that was
being decided on this case, though they had substantially the same evidence in
front of them. It is not unexpected that the Opposition Division was stricter
on evidence relating to a prior use disclosure and on added matter. However it
does lead one to question whether more could be done to achieve harmony between
national courts and the EPO.

Thanks so much, Suleman! Readers: could more have been done to achieve harmony between national courts and the EPO?

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